Choosing a Trade-Mark (Part 3)

December 8th, 2011

Molson CANADIAN. It’s a pretty common name in Canadian beer. And initially, it wasn’t able to be registered as a trade-mark! Why not?

First and foremost, a trade-mark can not be purely descriptive of the wares which are being sold. This includes a descriptor which indicates the geographical source of the wares. For example, if I was to attempt to trade-mark OKANAGAN LAW, not only would I be describing the services I am offering, but also the location in which I practice, which in itself is also a descriptor of the services.

Prior to a 2007 Federal Court case involving a wine region in Chile, the rule of thumb was that a person could not trade-mark a geographic name if the average Canadian consumer would identify that region as associated with the wares of the trade-marker. In other words, if Canadians connected OKANAGAN with wine, a person could not trade-mark OKANAGAN in association with wine. However, the 2007 case of Vina Leyda changed this to an objective test – that is, so long as the region is in fact associated with a particular type of wares or services, one can not trade-mark the geographic name for those wares and services. In other words, it matters not whether the average consumer might recognize a particular area for a particular ware or service, so long as it is actually produced there in noticeable quantities. The trade-mark CANADIAN for beer was not allowed on the basis that Canada is so well known for its beer production – cheers Canada!!

One potential way to get around this is to alter your trade-mark to elicit an emotional component or qualitative component, such as OKANAGAN PRIDE. In doing so, you are removing the descriptor of wares from the mark in such a way to change the overall meaning to one describing an emotion or quality, rather than a descriptor of the source of the wares.

A second way of overcoming this is by altering the geographic name just enough to merely suggest a connection with the geographic area, such as OKANAGULP (for Okanagan-made beverages).

A further caution to using geographic names is that no registered trade-mark will prevent the good faith use of a geographic place of business. For example, if a business wanted to open shop as OKANAGAN PIPELINES, even a registration of OKANAGAN PRIDE would not be able to prevent their use of the geographic descriptor. This means that the defensibility of your trade-mark, despite its registration, is inherently weak.